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December 2, 1998

December 4, 1998

Commissioner of Patents and Trademarks

Box Comments--Patents

Assistant Commissioner for Patents

Washington, D.C. 20231

Attention: Hiram H. Bernstein


The comments offered infra are the comments of the undersigned and reflect my personal views on the proposals which impact the number of claims to be allowed in an individual application and the treatment of Information Disclosure Statements (Topics 4, 9 and 10). Although I have concerns about several other proposed changes to the regulations, I offer comments as to the Topics noted above since these appear to have such an impact that regulatory changes should not be proposed. I will offer comments as to some of the other proposed changes if and when they are offered as proposed changes to the regulations.

I. Comments Against Limiting the Number of Claims in an Application (37 CFR 1.75)-- (Topic 4)

This commentor believes that the PTO should not propose a change to the regulations limiting the number of claims in an application. There are a multitude of reasons for this belief. It is interesting to note that the Supreme court, in the recently decided case of Pfaff v. Wells Electronics, Inc., No. 97-1130, decided November 10, 1998 rejected the long-followed "reduction to practice" and "substantial completion" standards in evaluating an on sale question since the terms were not found in the statute. The PTO appears to want to interpret the statute (35 U.S.C. 41) in a way obviously not intended by Congress by reading into it an ability to limit the number of claims where Congress has expressly indicated the contrary. Some detailed comments follow:

1. In In re Wakefield, 422 F.2d 897, 164 USPQ 636 (CCPA 1979), the court effectively eliminated the burden on the office argument where many claims were presented. Thus, the comment that large numbers of claims impose a severe burden on PTO clerical and examining resources is without merit. The remedy already in place to discourage the wide use of excessive numbers of claims is the significant fee charged for each claim in excess of twenty and each independent claim in excess of three.

2. There is no statutory authority to limit the number of claims subject to examination in a single application. 35 USC 41(a) places limits on the number of independent claims allowed for a defined filing fee and the total number of claims allowed for a defined filing fee. Effectively, by fixing a fee for each claim in excess of twenty and each independent claim in excess of three (and at a relatively significant rate), the statute provides for an unlimited number of claims in an application so long as an applicant pays the fee(s) statutorily provided therefor.

3. The PTO is not the inventor and cannot and should not decide for the inventor the number of claims deemed appropriate or proper in order to properly claim his or her invention. As long as the claims differ, one from the other, applicant has a statutory right to claim his invention in as many ways as he chooses so long as he pays the statutorily required fees therefor. So long as the claims particularly point out and distinctly claim the subject matter which the applicant regards as his invention, he or she should be allowed to present claims to the invention to the extent allowed by the statute. If Congress intended an upper limit on the number of claims which would be examined in a single application, it would have done so. However, it chose to charge significant fees for each claim over a statutorily set number rather than limit the number of claims possible in a single application.

4. Interestingly, the discussion regarding the proposal reflects that over 95% of all applications filed in FY 97 contained fewer than 40 claims and fewer than six independent claims. With this dramatic total of applications which comply with the number of claims desired to be fixed by regulation, what is the sense and logic in restricting the small number of inventors from submitting a larger number of claims. The PTO has presented no evidence or other logical explanation showing that the applicants who file more than forty claims do not need them. Moreover, there is no evidence reflected in the discussion suggesting that the larger number of claims are any more difficult to examine or have a significant adverse effect on reaching PTO goals.

The PTO has said, in its discussion, that it has no problem with the number of claims submitted in 95% of the applications filed. In the remaining applications, there is no showing in the discussion of any particular problem nor any indication that the larger number of claims are not necessary or that such an insignificant number of applications has an adverse effect on PTO resources that is not counterbalanced by at least an equal number of applications wherein only a few claims are presented.

Accordingly, this commentor believes that no limit should be placed on the number of claims allowed to be examined in a single application.

II. Comments Against Imposing Limits/Requirements on Information Disclosure Statement Submissions (37 CFR 1.98) and Refusing Information Disclosure Statement Consideration Under Certain Circumstances (37 CFR 1.98)-- (Topics 9 and 10)

This commentor is against imposing the limits or requirements set forth in the discussion for reasons that have to concern every practitioner. It is pointed out at the outset that the proposed practice is in conflict with section 552a(d)(2)(i) and (ii) of Title 5 of the United States Code wherein it is made clear that an applicant has a right to records which are accurate, complete, timely and relevant. If the PTO refuses to allow an applicant to amend his record for accuracy and completeness or tell him that the manner in which he has amended it is inappropriate, it is in direct conflict with the above identified section. Further comments are listed below:

1. Applicants should not be subjected to possible legal holdings of unenforceability because of the PTOÂ’s desire to avoid consideration of prior art uncovered during a prior art search or cited by an examiner in a related application. For reasons which appear to be based upon three examples of exaggerated submissions, the PTO desires to change the well established and accepted practice of allowing applicants to submit prior art in the manner presently allowed by the regulations. It is unfair and unacceptable to provide for such an overreaching change in the practice to accommodate the few problems alluded to in the discussion. What data is the PTO relying upon which justifies the tremendous change in the IDS practice. It was not that long ago that the PTO was looking for ways to make the submission of an IDS mandatory. Now, after many applicants (we donÂ’t know the number or percentage since that information has not been provided) have attempted to comply with their duty of disclosure by providing submissions under the existing regulations, the PTO now wants to restrict what it receives to a minimum number of references even though the examiner might indeed skim through or review many more patents than the number cited in a couple of the examples presented in the discussion when he or she searches the invention.

2. It has been a long standing practice that applicants can comply with their duty of disclosure by citing references believed to be relevant without evaluating the references and applying them in a detailed way to at least each of the independent claims. When references are uncovered in a search or are cited in the prosecution of a related application, it would be disingenuous not to disclose those references to the examiner. Now, the PTO would have us make the decision for the examiner where the number of references exceeds 10 and effectively use the logic of or think like the examiner. Otherwise, an applicant could be subject to a charge of inequitable conduct for intentionally withholding or failing to disclose a reference which he or she knew or should have known was material to the examination of the application simply because the examiner has a different view of a reference. No applicant wants to take such a risk or chance unnecessarily. Since applicants pay significant fees to have their applications examined, it would seem that the PTO would be attempting to encourage more applicants to comply with the duty of disclosure through the submission of possibly relevant prior art rather than limiting what the examiner is required to review. Interestingly, it is quite likely that an examiner would review much of the submitted prior art as a matter of course in his search of the prior art.

3. The PTO is proposing to have applicants submit copies of applications which are already in the files of the PTO. Considering the fact that there is concern about space, lost papers and the AdministrationÂ’s desire to rid the government of burdensome regulations, this commentator is against such a requirement, particularly since the PTO is moving towards becoming a paperless office over the next several years. Copies of U.S. patents are not required to be submitted. Why, then, are copies of related and pending/abandoned applications required to be submitted? There is no adverse impact on the PTO to accessing the pending or abandoned applications. To the extent that such applications are not immediately available to an examiner who might be working on the case, this is commonplace if papers have been filed which require entry, or fees have to be charged, or petitions have to be decided. The proposal to require such a submission appears to have drawbacks to the PTO which would mitigate against its consideration of such a change in practice.

In view of prosecution history estoppel (cf. Hilton Davis v. Warner-Jenkinson, 117 S Ct. 1040 (1997); 41 USPQ2d 1865), applicants should not be asked to create a record as to a description of each reference and how it applies to each claim as any oversight or erroneous comment then becomes useable against a patentee in any future litigation. This commentor is vigorously opposed to such a requirement.

Respectfully submitted,

Vincent D. Turner

Reg. No. 40,419

P.O. Box 33189

Las Vegas, NV 89129

(702) 396-4670

United States Patent and Trademark Office
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